Derivation
Notwithstanding- the failure to-prove an actual reduction to practice, Dr. Heshmatpour may
still prevail if he can prove that Megy derived the subject matter of the invention from Dr.
Heshmatpour. Derivation involves the claim that the adverse party did not "invent" the subject
matter of the count because that party derived the invention from another. Coop 154F.3datl332,
47 USPQ2d at 1905; Price v..SyMsek, 988 F.2d 1187, 1190, 26 USPQ2d 1031, 1033 (Fed. Cir.
1993). To prove derivation in an interference proceeding, the party asserting derivation must
establish prior conception of the claimed subject matter and communication of the conception to the
adverse claimant. Coope , 154 F.3d at 1332, 47 USPQ2d at 1905; Price, 988 F.2d at 1190, 26
USPQ2d at 1033.
Conception
"Conception is the formation 'in the mind of the inventor of a definite and permanent idea
of the complete and operative invention, as it is therefore to be applied in practice."' Kridl v.
McCormick, 105 F.3d 1446, 1449, 41 USPQ2d 1686, 1689 (Fed. Cir. 1997). A conception must
encompass all limitations of the count (Kridl, 105 F.3d at 1449, 41 USPQ2d at 1689), and "is
complete only when the idea is so clearly defined in the inventor's mind that only ordinary skill
would be necessary to reduce the invention to practice, without extensive research or
experimentation" (Burroughs Wellcome Co. v. Barr Lab., 40 F.3d 1223, 1228, 32 USPQ2d 1915,
1919 (Fed. Cir. 1994)).
When a party seeks to prove conception via the oral testimony of a putative inventor, the
party must proffer evidence corroborating that testimony. Mahurkar v. C.R. Bard, Inc., 79 F.3d
1572,1577,38USPQ2d 1288,1290(Fed. Cit. 1996);Price, 988F.2dat 1194,26USPQ2d at 1036.
That rule addresses the concern that a party claiming inventorship might be tempted to describe his
actions in an unjustifiably self-serving manner in order to obtain a patent or to maintain an existing
patent. See Eibel Process Co. v. Minn. & Ont. Pgper Co., 261 U.S. 45, 60 (1923); Kridl, 105 F.3d
at 1450, 41 USPQ2d at 1689 ("The tribunal must also bear in mind the purpose of corroboration,
which is to prevent fraud, by providing independent confirmation of the inventor's testimony");
Price, 988 F.2d at 1194-95, 26 USPQ2d at 1036-37. There is no particular formula that an inventor
must follow in providing corroboration of his testimony of conception. See Kridl, 105 F.3d at 1450,
-10-
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007